7.4.5 Procedural defects and substantive law defects
If a trial or appeal decision is revoked by the IP High Court, the JPO will commence further trial proceedings to issue a new trial or appeal decision.156
7.4.5.1 Procedural defects
Procedural defects that have been found to affect the conclusion of a trial or appeal decision include, for example:
- serving a copy of a request for a trial to an old (and no longer current) address of the demandee;157
- a change of proceedings – which should have been oral proceedings – to documentary proceedings, which was unfair and beyond the reasonable discretion of the panel of administrative patent judges;158 and
- rejecting an amendment without providing an opportunity for the submission of further amendments and opinions on the basis of a notice of reasons for refusal that included new well-known art corresponding to a secondary reference that was not provided in the initial notice of reasons for refusal.159
7.4.5.2 Substantive law defect
A substantive law defect is deemed to be a ground for revocation because a trial or appeal decision is not correct. A summary of the main grounds for revocation due to a substantive defect is provided in this section.
7.4.5.2.1 Eligibility of invention
The subject to which a patent right is granted is an “invention.” The Patent Act defines an “invention” as a “highly advanced creation of technical ideas utilizing the laws of nature.”160 To be regarded as an invention, a creation must utilize laws of nature excluding, for example, mere mental activities, purely academic laws or artificial arrangements. Even if an act resulting from a human mental activity is an invention, the eligibility of this “invention” for patent rights is based on the essence of it being directed to providing a technical means for supporting or replacing a human mental activity.161
7.4.5.2.2 Novelty and inventive step
The presence or absence of an inventive step is often used as a ground for the revocation of a trial or appeal decision.162
Identification of the presence or absence of inventive step is determined by the JPO in a trial or appeal decision, usually in the following order:
- 1. identification of the gist of the invention (present invention);
- 2. identification of the primary cited invention;
- 3. comparison of the present invention and the primary cited invention;
- 4. identification of correspondence and difference; and
- 5. determination of whether the present invention could be easily conceived.
Accordingly, the ground for revocation argued by a plaintiff is usually that some or all of the above five steps have been incorrectly determined by the TAD. If the first four steps have been incorrectly determined, but no error is found in the ultimate decision (Step 5), this will not serve as an effective ground for revocation of a trial or appeal decision.
Step 1 – identification of the gist of the invention. The gist of the invention of a patent is to be understood from the statement in the scope of claims.163 In the Lipase Case, the Supreme Court clarified that the gist of the invention – serving as the basis for the examination of the existence of novelty and inventive step – should be determined based on the statement in the scope of claims unless:
- there are “special circumstances” whereby it is not possible to unambiguously and clearly understand the technical meaning of the statement in the scope of claims;
- the statement has an obvious error in light of the statement in the detailed description of the invention in the specification; or
- for certain other reasons.164
However, when identifying the gist of the invention, it is acceptable to read through the statement in the detailed description of the invention and the drawings to clarify technical details relating to the invention. The Lipase Case presents a theory that elements described only in the detailed description of the invention and the drawings should not be added beyond the statement in the scope of claims.165 That is, the elements described only in the detailed description of the invention and the drawings should not be considered if they extend beyond the scope of claims outlined in the statement.
Step 2 – identification of the primary cited invention. The primary cited invention is an invention that:
- is common knowledge within Japan or in a foreign country prior to the filing of the patent application;
- has been publicly worked; or
- is described in a distributed publication or made available online for public use.166
Step 3 – comparison of the present invention and the primary cited invention. For identification of correspondence and difference, the most suitable reference is typically selected as a principal reference to compare with the present invention.
Step 4 – identification of correspondence and difference. The IP High Court will compare the present invention with the primary cited invention to investigate:
- whether there is any error in correspondence or difference as identified in a trial or appeal decision; and
- whether any further correspondences or differences that were not identified in the trial or appeal decision exist.
Step 5 – determination of whether the present invention could be easily conceived. It is often disputed whether a difference identified by comparing the present invention and the primary cited invention would have been easily conceived by persons having ordinary skill in the art at the time of the filing of the application.
The court usually investigates whether the differences identified in Step 3 would have been easily conceivable by those having ordinary skill in the art by combining one or more references (a secondary reference) or well-known technology with the primary cited invention.
The existence of circumstances that may have prevented a person having ordinary skill in the art from easily conceiving the present invention and the advantageous effects of the present invention also affect a decision concerning the requirement of an inventive step.
7.4.5.2.3 Description requirement
Article 36 of the Patent Act stipulates matters that must be included in a patent application. The patent system grants an exclusive right for a certain period to a patented invention in exchange for publication of the invention. Therefore, a defect in the disclosure at the time of the filing of a patent application will prevent the grant of an exclusive right.
7.4.5.2.4 Support requirement
The statement in the scope of claims must comply with the requirement that the invention for which the patent is sought is stated in the detailed description of the invention under Article 36(6)(i) of the Patent Act. This is called the “support requirement.” The support requirement is necessary because
the specification to be attached to the application by a person who seeks a patent granted for an invention primarily has the role of disclosing technical details of the invention to the public and clarifying the scope of effect of the invention after establishment of a patent right (technical scope of patented invention) and therefore, in order to obtain a patent based on the description of the invention in the scope of claims, the statement in the detailed description of the invention in the specification must enable those having ordinary skill in the art to solve the problem of the invention.167
The support requirement should be determined
by comparing the statement in the scope of claims and the statement in the detailed description of the invention, and investigating whether the invention described in the scope of claims corresponds to the invention described in the detailed description of the invention, and falls within the scope that can be recognized as enabling those having ordinary skill in the art to solve the problem of the invention based on the statement in the detailed description of the invention or not, and whether the invention described in the scope of the claims falls within the scope that is recognized as enabling those having ordinary skill in the art to solve the problem of the invention in light of the common technical knowledge at the time of filing of the application.168
7.4.5.2.5 Enablement requirement
The Patent Act provides that the statement in the detailed description of the invention must be clear and sufficient in order to enable those having ordinary skill in the art of the invention to work the invention.169
To determine whether the enablement requirement is satisfied, not only the statement in the specification and the drawings but also common technical knowledge at the time of the filing of the application can be taken into consideration.170
7.4.5.2.6 Clarity requirement
The invention for which a patent is sought must be clear from the statement in the scope of claims.171 This is called the “clarity requirement.”
In the Pravastatin Sodium Case, the Supreme Court ruled that a product-by-process claim can meet the clarity requirement in exceptional circumstances, such as when it is impossible to specify the product directly from its structure or features at the time of the filing of the application and where excessive expenditure or time is required to identify the product’s structure or features.172
7.4.5.2.7 Correction requirement
A patentee may file a request for a trial for correction to correct the specifications, the scope of the claims or the drawings of a patented invention for which a patent right was granted.173 However, to prevent any delay if a trial for invalidation is pending, a request for correction is allowed within certain periods in relation to:
- restricting the scope of claims;
- correcting errors or mistranslations;
- clarifying ambiguous statements;174 and
- rewriting a claim that cites another claim into a claim that does not cite that other claim.175
Furthermore, due to the so-called prohibition of the addition of new matters, the correction must remain within the scope of matters described in the specification, scope of claims or drawings of the patent.176 Whether a correction involves the addition of new matters is determined from the perspective of a person having ordinary skill in the art in relation to technical matters derived from the comprehensive interpretation of the specification and drawings. Prohibiting the addition of new matters is intended to prevent unexpected loss by third parties and to ensure that the interests of the patentee and third parties are balanced.177
A party who is dissatisfied with a decision of correction in a trial decision – that is, an appellant or a patentee whose correction was not granted – may contest the matter in an action for revocation of a trial decision before the court.
When contesting whether a correction was appropriate in an action for the revocation of a trial decision, identification of the gist of the invention before and after the correction needs to be argued by considering the possibility of either the grant or rejection of the correction by the court. Additionally, when a defendant contests the determination of the appropriateness of a correction in the trial decision, the plaintiff must argue against this based on the gist of the invention before or after the correction (or both), taking into consideration the possibility of the court either granting or rejecting the correction.